Final ruling is still pending; Judge believes that Samsung infringes, but Apple's patents are questionable

For the world's largest phonemaker and world's largest Android phonemaker, Samsung Electronics Comp., Ltd. (SEO 005930) some good news finally came in its lawsuit war [1][2][3][4] [5][6][7] with Apple, Inc. (AAPL). After seeing its flagship Galaxy Tab 10.1 banned from sale in Germany (on the grounds of design patent infringements) and in Australia (on the grounds of technology patent infringements) it has scored an early victory in arguably its most important court battle in the U.S.

Specifically Judge Koh commented that an injunction was not warranted based on Apple's sole technology patent in the case, U.S. Patent No. 7,469,381. She called her decision on the patent, which covers document scrolling "tentative" and said she would issue a final ruling "fairly promptly". She comments, "It took a long time to make that distinction"

Reuters' court reporter writes that the judge commented that she felt Samsung did infringe on Apple's patents, though the report does not clarify whether she indicated which patents she felt were infringed -- the three design patents, or the sole technology patent. On the other hand, the report says the judge complained that Apple is having problems establishing the validity of its patents.

II. Apple's List Scrolling Patent and Samsung's Violation

The technology patent by Apple claims ownership to temporarily displaying a non-active region to a document, such as a webpage or list, when scrolling, zooming, or rotating. Our testing indicates that in Android 2.3 Gingerbread -- the OS on the Galaxy S smartphone named in the suit -- that such a capability is indeed present in some places.

In the Gallery app when you scroll downward part of a black empty row is shown when you reach the end of the list of pictures and keeps scrolling. When you release, the list bounced back to the last row.

Samsung/Google's "slavish" infringement [Gallery App]

This scrolling feature is not found, based on our testing, on webpages in the built in browser. However, a similar feature -- also covered by Apple's patent -- is present. When you zoom out, you will see gray around your webpage when you reach the edges of the document. Releasing the zoom pinch will bounce the document back to full screen, as mentioned in the Apple patent.

Samsung/Google's "slavish" infringement [Browser App]

This patent seems relatively obvious in that it basically covers an animation and if GUI animations were broadly patentable video games as we know them couldn't exist today, software would be litigated into oblivion, and the web would be a ghost town. That said Samsung will need to follow the path of obviousness and invalidate Apple's patent in court, as it clearly does use the animation technique covered in this patent.

If Samsung cannot do that for some reason, it should be relatively trivial to remove this feature as the animation does not significantly improve the Android experience in our opinion.

(As a technical note it is operating system maker Google, Inc. (GOOG) who created the infringing design, but Samsung uses Google's OS so is being sued by proxy.)

III. Apple's Design Patents

Now that Judge Koh has tentatively denied Apple's motion for a preliminary injunction regarding the utility patent, the question becomes what she will do when it comes to the design patents -- U.S. Design Patent No. D618,677, D593,087, and D504,889.

The first two patents cover the design of the iPhone 4 and iPhone (original), respectively.

The validity of these patents could be question mainly from the perspective of Apple's broad application of them.

Below we have diagrammed the differences between the iPhone designs and Samsung's Galaxy S, which Apple claims "slavishly" copied the iPhone. Specifically note that the folowing features are different:

Button count and placement

Connectors

Side profile of phone (note the lip on Samsung's design)

Size of screen and general phone size.

Logo/name placement on body

Similar differences can be found between the Samsung Galaxy Tab 10.1 and the iPad, an early version of which is covered in the final patent. We've detail these differences between the patent, the actual iPad, and the Galaxy Tab 10. below, which include:

Only Galaxy Tab 10.1 has a camera (compared to the original iPad).

The thickness in the design patent doesn't match the thickness of the iPad or Galaxy Tab (please measure this in an imaging software, in pixels, if you don't believe us).

Bezel sizes don't match between any of the three designs.

Connectors and buttons on the side are different.

Screen sizes and aspect ratios are different.

Only the iPad has a home button.

All tablets are clearly and unambiguously branded.

The back color doesn't match.

Really when you look carefully from an artistic perspective (presumably the criteria for merit on a design patent) in both the tablet and smartphone cases the biggest visual similarities are simply the general form factor (thin rectangles) and the color scheme. In this sense the devices are somewhat similar in looks.

There was a bit of court room drama that's gathered much attention in which Judge Koh held up the Tab and iPad and asked Samsung's lawyer Kathleen Sullivan to identify her company's product. Ms. Sullivan reportedly could not tell them apart at that distance (it was unclear if Judge Koh was covering the iPad's home screen button).

At that point Judge Koh asked, "Can any of Samsung's lawyers tell me which one is Samsung and which one is Apple?"

At that point one of Samsung's other lawyers finally coughed up the correct response.

While the incident was certainly humorous, it's important to not put too much weight in such court room drama, lest it leads one to misleading conclusions. One need only remember the controversial O.J. Simpson/Johnny Cochrane "if the glove doesn't fit" showmanship to realize that.

While the designs are somewhat similar in a very general sense, it seems a slippery slope to grant Apple broad ownership of such a design for two reasons. First, it would create ambiguity of exactly how broad Apple's design ownership is. Second, it would essentially grant a monopoly on the state of the art smart phone and tablet form factor to Apple.

Given the radical differences in the designs, it would seem if the designs are found to "infringe" that only Apple can make thin rectangular smart phones and tablets. This kind of ruling could have a catastrophic effect on many emerging electronics markets. After all, if this kind of standard was applied to the PC industry, Dell, Inc. (DELL) and Hewlett-Packard Comp. (HPQ) could be suing each other and Apple for copying each others' "general form factor".

Clearly this kind of broad design ownership hasn't been granted in other electronics markets, so it seems doubtful that Judge Koh will rule this way. But stranger things have happened.

IV. Looking Ahead

In the U.S. patent battle, a final ruling on the preliminary injunction request with respect to all patents will soon be issued. Given the pressure from wireless carriers Verizon Communications, Inc. (VZ) and Deutsche Telekom AG's (ETR:DTE) T-Mobile USA [1][2], and Judge Koh's previous statements, it seems likely that Apple's request will be denied.

The question then will become whether Samsung can successfully invalidate Apple's patents, or at least escape a design infringement ruling (as the utility patent's infring features could easily be removed). Also pertinent is whether Samsung can succeed in its counter claim, which sues Apple on the grounds of infringing on many of its 3G communications patents.

There's also been recent action in the Netherlands and Australian arenas, we will update you on this shortly.

Seen a lot of crucial facts left out and editorialized here and elsewhere and feel I should clear up a few things:

1) Patents are a quid pro quo. You invest in research and disclose your invention to the public, then the government gives you a 20 year monopoly on that invention if it is new and inventive. This is huge incentive for research. Without patents research investment would plummet because it would be more difficult to profit from the fruits of that investment.

2) In the US, Apple bears the burden of proving the likelihood of validity and infringement to get a preliminary injunction. Samsung need only show a substantial question about validity of the patent to avoid a preliminary injunction. It should be noted that there are other factors at play that also must be satisfied for a preliminary injunction.

3) In Germany, and likely other foreign countries, the legality of Apple's design patent is legally presumed for adjudicating a preliminary injunction. This may be challenged, but then Samsung would bear the burden of proof (much more difficult to challenge validity than in the US where Apple bears the burden). Furthermore, it is more likely that design patents will be subject of preliminary injunctions than utility patents in Germany since courts apparently think that irreparable harm is more likely in design patent cases.

In summary, I dislike Apple's products and practices as much as the next man, but in this case substantial blame for the preliminary injunction in Germany should be on the laws of Germany and its courts.

quote: 1) Patents are a quid pro quo. You invest in research and disclose your invention to the public, then the government gives you a 20 year monopoly on that invention if it is new and inventive. This is huge incentive for research. Without patents research investment would plummet because it would be more difficult to profit from the fruits of that investment.

Though I think your comment was made with good intentions given your latter commentary, I would like to correct you slightly, pointing out that I never said patents were a bad thing.

What I was speaking to with respect to the utility patent's validity was the issue of obviousness.

There's a huge difference between a patent on a complex manufacturing process versus a patent on a GUI feature that takes an hour of programming work to implement.

Again, patenting GUI widgets/animations is just not common place. Otherwise virtually no websites, software, etc. would exist as companies would only monopolies on common page layouts, gui elements, etc.

quote: 2) In the US, Apple bears the burden of proving the likelihood of validity and infringement to get a preliminary injunction. Samsung need only show a substantial question about validity of the patent to avoid a preliminary injunction. It should be noted that there are other factors at play that also must be satisfied for a preliminary injunction.

That's a fair point. I did allude to this, mentioning that the judge reminded both parties about Apple's need to prove the validity of the patents.

A preliminary injunction is only issued typically when one party will be severely damaged if the supposed infringement continues. In this case it's hard to see how a single GUI animations would somehow magically effect Apple's U.S. sales or lack thereof.

quote: 3) In Germany, and likely other foreign countries, the legality of Apple's design patent is legally presumed for adjudicating a preliminary injunction. This may be challenged, but then Samsung would bear the burden of proof (much more difficult to challenge validity than in the US where Apple bears the burden). Furthermore, it is more likely that design patents will be subject of preliminary injunctions than utility patents in Germany since courts apparently think that irreparable harm is more likely in design patent cases.

Your latter point is interesting... I hadn't heard that. Do you have any references to support that? I would definitely consider adding that to future pieces if it pans out. I haven't seen that in reports elsewhere.

quote: In summary, I dislike Apple's products and practices as much as the next man, but in this case substantial blame for the preliminary injunction in Germany should be on the laws of Germany and its courts.

Regarding #1, not directed at the article, more of a general comment. Basically anything under the sun made by man is patentable. Sweat of the brow isn't a requirement for patentability if the invention is new and inventive. It's hard to legislate to protect the complicated machine taking years to design if you aren't also protecting the 5 second conception of a new GUI design. Both should be equally patentable imo.

Germany litigates utlity patent infringement and validity in two separate proceedings. For instance, you can win on infringement and two years later find out you actually lost because the patent was invalid. Not sure if that is the same for designs. In the US it is done all at once for both utility patents and designs.

quote: Regarding #1, not directed at the article, more of a general comment. Basically anything under the sun made by man is patentable. Sweat of the brow isn't a requirement for patentability if the invention is new and inventive. It's hard to legislate to protect the complicated machine taking years to design if you aren't also protecting the 5 second conception of a new GUI design. Both should be equally patentable imo.

I disagree with you there. As I said the market as we know it would be dead if GUI elements and animations were broadly patentable. As in you couldn't make a webpage, you couldn't make an OS, you couldn't make an application, because if you sold enough someone would sue you off the market.

Patents should only be granted for non-obvious technologies.

Patenting "making toast" (it's been done) or "swing on a swing" (also done) should NOT be allowed to have a patent. Nor should an obvious animation you can code in an hour.

I'm not saying a time limit HAS to apply. You could create a patentable idea in 10 minutes in my opinion -- but it MUST be non-obvious or the entire patent system is essentially a mound of garbage legal trolling.

Germany litigates utlity patent infringement and validity in two separate proceedings. For instance, you can win on infringement and two years later find out you actually lost because the patent was invalid. Not sure if that is the same for designs. In the US it is done all at once for both utility patents and designs.

Not really a disagreement. By inventive I mean non-obvious. Courts have struggled with obviousness (inventive step outside the US) forever. The crazy patents you mention were pre-2007 due to a wacky outgrowth of the law at that time. The Supreme Court cleared it up in 2007 (KSR v. Teleflex) and the really crazy patents are less frequent now in the US. Bad patents get granted due to the limited time a patent office can invest in examining each one, bad examiner training, etc. It's inevitable. That's why we have the courts to hopefully clear these things up. Note that the crazy swing and toast patents weren't litigated.

quote: Bad patents get granted due to the limited time a patent office can invest in examining each one, bad examiner training, etc. It's inevitable. That's why we have the courts to hopefully clear these things up.

But isn't this a serious flaw in the system? It means you have to litigate to prove that some patent is obvious and shouldn't be patentable. This may work where you only have large corporations with a lot of money to pay lawyers, but it certainly will prevent smaller players (with not enough money to fight a legal battle against a mega-corporation) from entering the market where that patent applies. Obvious patents shouldn't be granted in the first place.

Yes, no doubt this is a flaw. The subject becomes what to do about it. Obviously, better examiner training costs money and more time on each patent application at the patent office costs money. Enter the America Invents Act (AIA) that was just passed which allows the USPTO to set its own fees. This resulted in an immediate 15% increase in all fees (50% reduction on all fees for small entities existed in the previous law and is maintained, new 75% reduction in all fees for micro-entities which are individual inventors with few previous applications).

Looks good right? The USPTO gets more money for the office to hire more examiners, train them better, allow them to work on fewer cases, and examine cases more quickly. Well, the House of Reps managed to screw it up. For years congress has diverted billions of dollars from the USPTO to other government purposes, thus putting massive financial constraints on the USPTO. The Senate bill that was introduced for the AIA eliminated fee diversion, thus allowing the USPTO to use all of the fees it collects to improve its processes, hire examiners, etc. The house bill (which was ultimately signed into law) maintained fee diversion. So although fees have gone up, the patent office still could be greatly constrained on budget. HoR fail.

"This may work where you only have large corporations with a lot of money to pay lawyers, but it certainly will prevent smaller players (with not enough money to fight a legal battle against a mega-corporation) from entering the market where that patent applies. Obvious patents shouldn't be granted in the first place."

Its a zero-sum game. If we place the burden of proof on the person making the patent, the small inventive guy in his garage will have his idea stolen right under him by the big corporate guy (think, the Microsofts of the early '80's, Blizzard stealing from small time game makers, etc), where even if their patent is legitimate they won't be able to hire lawyers to protect it. The flip side is the situation that you are describing, the little guy getting sued by the corporate giant over a bs patent.